T 3142/19 – Combination of Features and Added Subject-Matter

Under the European Patent Convention, a European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the patent application as filed.  The underlying principle of this law is that an applicant or patentee may not improve his position by adding material which was not present in his original application.  This provides legal certainty and security for third parties who, when relying on the content of the application document, will not be taken by surprise by the addition of previously undisclosed information which could lead to claims which would not have been foreseen.

European patent EP14722003 concerned a computer-based systems and methods for use in facilitating the classification of cytological specimens where the system acquires or imports image data of the specimen.

During prosecution, as is common practice, the applicant amended the main claim by the addition of a number of features and provided information as to where in the application as filed the additional features could be found i.e. the applicant provided evidence that the new features of the claim were already in the application as filed and therefore were not subject-matter which extended beyond the content of the application as filed.

The Examiner objected to the amendments on the ground that the combination of the features was not disclosed or foreshadowed in the application as filed and ultimately refused to grant the patent.  The Examiner referred to an established principle of European patent law that a patent application is not a reservoir from which features pertaining to separate embodiments could be combined in order to artificially create a particular embodiment, that is one is not allowed to use individual features like building blocks to create a model which is not suggested in the application.

The applicant appealed the Examiner’s refusal and included arguments that the Examiner had taken a very proscriptive approach and was raising objections which were based on the style in which the application was written, which was necessitated by the need to describe complex computer system inventions in a structured manner, instead of focusing on the disclosure as a whole.  The applicant also referred to the so-called “Gold Standard” test for added subject-matter.  This test states that amendments must be clearly and unambiguously derivable from the application as filed.  However, the amendments need not be explicitly disclosed, but may be implicitly disclosed.  The key question is: Is the skilled person presented with any new technical material?

The Board of Appeal disagreed with the Examiner and took the position that, while it is true that if a patent application provides an indication or pointer towards the necessity or desirability of a certain combination of features then an amendment introducing these features does not add new subject-matter, it does not follow that if there are no such indications or pointers, then including that combination of features in a claim must necessarily constitute the addition of new subject-matter.  The Board did, however, note that if there were an excessive number of optional features, then the choice of a given individual combination might constitute the addition of new subject-matter but whether this is so would depend on the specific facts of the case in question.

The acknowledgement that there need not necessarily be an explicit indication or pointer towards a particular combination of features does represent something of a departure from typical European examination practice which is recognised as taking a strict approach towards added subject-matter, even though this decision does not depart from the “Gold Standard” test inasmuch as there is no requirement for an amendment to have explicit basis in an application as filed – implicit basis is acceptable.

Notwithstanding the success of the applicant’s appeal, it is best practice to provide clear, explicit basis for features and combinations of features wherever they can be foreseen as being important to the description and functioning of an invention to reduce the risk of an objection of added subject-matter.  However, this case may provide a useful resource in the prosecution of cases where the Examiner could be viewed as taking an overly strict view with respect to the allowability of amendments.